USPTO Patents Application 09888194

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IN THE I
In Re Application of

Terry G. Young
Serial No.: 09/888,194

Filed: 06/23/01

Title: Valve Actuator Apparatus

COPY OF PAPERS
ORIGINALLY FILE

S PATENT AND TRADEMARK OFFICE
§ Attorney Docket No.: Safoco-1-2

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Art Unit No. 3753

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§ Examiner: A. Michael Chambers

RESPONSE

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Assistant Commissioner for Patents
Washington, DC 20231

^ Sir:

As discussed with the Examiner jn a teleconference regarding the Information
Disclosure Statement, enclosed herewith is form PTO-1449 listing all references previously
cited in parent applications U.S. Application Serial No. 09/538;881, now U.S. Patent No.
6,250,605, which in turn was a continuation of Serial No. 08/968,904, now U.S. Patent No.
6,089,531, which in turn was a continuation of Serial No. 08/206,424, now abandoned,
together with copies of most of those references. As explained to the Examiner, the
references not included are the three untitled drawings of valve actuator sold by Aerborne
Control Systems, Inc. in 1984-1985 and two fliers namely: Instruction Pamphlet: "Bonnet
Seal Replacement," 1 page, Baker CAC, Belle Chasse, Louisiana, Sept. 15, 1985, and
Product Bulletin: Pneumatic Actuator Tandem Dia-Fiex, Unit No. 885-92-T2153, 2 pages,
Baker CAC, Inc., Sept. 23, 1987.

Claims 21-23 stand rejected under 35 USC §101 as claiming the same invention as
thatofClaims 1 and 2 of prior U.S. Patent No. 6,205,605 and Claim 27 ofpriorU.S. Patent
No. 6,089,531, respectively. This double-patenting rejection is respectfully traversed.

Turning first to Claim 27 of prior U.S. Patent No. 6,089,531 , that claim calls for, inter
alia, upper and lower spring retainers that are rotatable relative to the bonnet stem in the

bonnet housing, respectively. Claims 21-23 of the present application are not so limited.
Indeed, Claims 21-23 do not recite that the upper or lower spring retainers are rotatable
relative to the bonnet stem or the bonnet housing, respectively. Additionally, with respect
to Claims 1 and 2 of U.S. Patent No. 6,250,605, Claims 21 and 22 do not require that the
upper spring retainer be separate from the operator member, a limitation which is present
in both Claims 1 and 2 of U.S. Patent No. 6,250,605.

With respect to Claim 23, that claim recites a hydraulic valve actuator including a
hydraulic piston member. Claims 1 and 2 of U.S. Patent No. 6,250,605 are not so limited.
Furthermore, Claim 23 does not recite that the upper spring retainer is rotatable with
respect to the bonnet stem, a limitation which is present in both Claims 1 and 2 of U.S.
Patent No. 6,250,605.

Applicant notes that the Examiner has considered the prior art of record in the
previous applications which matured into U.S. Patent Nos. 6,089,531 and 6,250,605, most
i of which are being supplied with this response. Accordingly, since it has been
demonstrated that Claims 2 1 -23 are not subject to double-patenting as claiming the same
I invention of Claim 27 of U.S. Patent No. 6,089,531 or Claims 1 and 2 of U.S. Patent No.
- 6,250,605, it is respectfully submitted that Claims 21-23 are in condition for allowance
which is hereby earnestly solicited and respectfully requested.

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Reg. No. 24,810

BROWNING BUSHMAN
5718 Westheimer, Suite 1800

CERTIFICATE OF MAILING

Houston, TX 77057
Tel.: (713)266-5593
Fax: (713)266-5169

I, C James Bushman, hereby certify that this correspondence and all
referenced enclosures are being deposited with the United States
Postal Service as first class mail in an envelope addressed to Assistant
Commissioner for Patents, Washington, DC 20231, on February 1,

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